Espie Angelica A. de Leon examines the key factors that help inventors and businesses decide which innovations are worth protecting and how to maximize its value.

Novelty, non-obviousness, usefulness. These are the three primary factors that will decide whether an invention is patentable or not.

However, the selection process for patentable technologies and innovations does not stop after ticking all three boxes. Beyond these requirements, business enterprises and individual inventors must consider other criteria before finally deciding which ones to patent.

What are these other criteria? Our interviewees shared the following factors as additional considerations in the selection process:

Commercial value, market potential, competitive relevance

First of all, the technology must be at the core of the product and must

clearly differentiate from what is offered in the market.

One example is Dyson’s patented bladeless fan technology. ”It is not merely an incremental improvement but defines the overall product architecture and user experience. It enables Dyson to distinguish its products visually and functionally from conventional fans, while also making it more difficult for competitors to replicate the same combination of performance, safety and design without infringing or having to engineer around the patented features,” said Jian Ming Chang, a partner at Dentons Rodyk in Singapore.

Another example is Novo Nordisk’s patented semaglutide-based drugs for diabetes. Among these drugs are those under the Ozempic brand. These drugs are built around a key active compound that drives the therapeutic effect.

Second, patents should not be treated merely as legal tools, but as business assets as well.

Hence, a patent strategy must always be aligned with the company’s overall business and innovation strategy, which means research and development (R&D) and legal teams should work closely together. “Misalignment between patent strategy and business strategy often creates common failure modes. For example, a patent portfolio that is disconnected from the company’s commercial objectives may become underutilized and fail to generate meaningful business value. Likewise, a patent strategy developed without a clear business strategy may be unable to create or sustain a commercial competitive advantage,” explained Radeemada Mungkarndee, a partner at Lexel IP in Bangkok.

Therefore, inventions that safeguard core revenue streams or tap into new markets must be prioritized. Xia Zheng, founder of AFD China in Beijing, offered an example: “The R&D team of a battery company has two technological achievements to evaluate. One is an anti-collision optimization technology for battery casings, and the other is a high-voltage safety integrated structure for power battery packs, which directly affects battery safety and energy density. From a commercial value perspective, the company can prioritize applying for a patent for the latter. The reason is that the anti-collision optimization technology is a minor improvement with low technical barriers and low profit margins, while the latter is a core component of new energy batteries, offering substantial market size and profit potential.”

In short, when deciding which technology or innovation to patent, the important questions are: Is it linked to a key product, future product line or market advantage? Is the value proposition offered by the product connected to this technology? Is the technology linked to a product or service that will bring in revenues soon? Who are the natural licensees? Is this technology likely to become industry-standard? Can claims be drafted broadly enough to capture third-party implementations? Is the application offensive or defensive in nature?

A patent serves an offensive purpose if it blocks competitors. For example, a patent for an under-display camera module directly prevents rivals from introducing identical full-screen smartphones in the market and securing a monopoly.

On the other hand, a patent functions defensively if it safeguards operational freedom. An example is a heat dissipation structure used in the packaging process. “The structure itself is not a core selling point; rather, the patent is filed to prevent competitors from setting up patent barriers in this niche area, which would force the company to work around them or pay high licensing fees when iterating its products in the future,” Zheng said.

“If a competitor already dominates the space with a dense portfolio,” noted Sher Hann Chua, a TMT/IP counsel at Linklaters in Hong Kong, “the question becomes whether a new filing can carve out a genuinely differentiated position, or whether it can satisfy the novelty requirement at all.”

In terms of competitive relevance, equally important are these questions: Would it strengthen negotiation position? Can it support investment or fundraising?

“As much as possible, this should be part of a cost-benefit and ROI analysis as large portfolios can be expensive to prepare, file, prosecute, maintain and enforce, so companies should manage filing costs carefully and focus on inventions that support real business objectives, commercial needs and wants,” said Deanna Wong, owner of DeLab Consulting in Hong Kong.

For example, a home appliance company files multiple patent applications for a core intelligent temperature control algorithm targeting the global market. Doing this may be expensive, involving tens of thousands to hundreds of thousands of dollars. However, this is feasible because the invention is expected to corner a high-end market share worth hundreds of millions of dollars.

Meanwhile, the company makes improvements to a washing machine’s door gasket. This is only applicable to old model washing machines though. Suppose the company applies for a patent and maintains it for several years. The downside is that the annual fees and attorney costs may exceed the total incremental profit earned by the company through this invention.

Novo Nordisk’s Wegovy, a patented higher-dose semaglutide formulation approved by the Singapore Health Sciences Authority and other regulators for chronic weight management, also demonstrates comparable commercial success. “Patent protection in this context is critical because it safeguards substantial investment in research and clinical development, and helps secure a period of market exclusivity in a highly competitive and high-value pharmaceutical space. This exclusivity, in turn, creates a significant barrier to entry for competitors, who must either wait for patent expiry or develop alternative compounds with comparable efficacy,” added Chang.

“Commercial value is critical. If an invention is unlikely to generate revenue, whether through product sales, licensing or attracting investment, it may not be worth patenting, even if technically patentable,” he pointed out.

Technology life cycle

The critical question is: Will the technology remain commercially relevant by the time a patent is granted in the mid-term or long-term? This is especially relevant in today’s fast moving consumer market.

Rapidly iterating software, for instance, may become obsolete quickly. However, fundamental manufacturing processes may retain their value for a much longer period, therefore making it more viable to seek patent protection for such processes.

Geographic considerations

This is essential, given the territorial nature of patent rights. “Nationalizing a PCT application across every jurisdiction is prohibitively expensive. Businesses should map where their key markets, competitors, prospective licensees and infringers are concentrated and take advantage of regional filing mechanisms or accelerated prosecution procedures where available,” said Chua.

Wong stressed that once a patent is obtained, it is fully disclosed, and third parties may produce or use the patented products or processes if the patent is not extended to their country. “Many times, geographical considerations for filing a patent include assessments to avoid unnecessary filings in countries where there is no real market, manufacturing base, competitor activity or enforcement value, but there is also always a risk of third parties using the patent in other, unprotected locations,” she explained.

Detectability and enforceability

According to Chang, this is often overlooked. “A patent is only valuable if infringement can be detected and enforced in the real world. For example, features embodied in a product are generally easier to enforce than processes that take place entirely inside a factory,” he noted.

Another example is molecular compounds. Pharmaceutical companies typically seek patent protection for specific molecular compounds because chemical analysis can easily confirm patent infringement. On the other hand, patents for broad business methods are generally difficult to monitor and enforce.

Difficulty of design-around

Does the technology block competitors from designing around the product?

“Patenting technologies that competitors can easily circumvent with minor modifications should be avoided,” said Zheng. “For example, for a display, if the claim limits the number of openings in a certain matrix, competitors can easily avoid infringement by making simple modifications. In contrast, if the claim limits that the opening area in one region is greater than that in another region, competitors may find it difficult to circumvent through simple changes.”

Patent or trade secret?

In reference to the case of the washing machine door gasket mentioned above, the company took the trade secret protection route instead.

“In some cases, maintaining confidentiality and keeping technical know-how as trade secrets, particularly for processes that are difficult to reverse engineer, may offer better long-term protection than the typical 20-years patent protection term,” Chang pointed out.

In other words, if competitors can easily learn the workings of a technology embedded in a product just by scrutinizing the product, aim for patent protection. But if the technology cannot be determined by merely examining a product, as in the case of an internal process or a backend server algorithm, opt for trade secret protection.

Coca Cola’s recipe, called 7X, is a closely guarded trade secret. The handwritten document is kept in a vault at the World of Coca Cola museum in Atlanta, Georgia. Only a few employees know about the recipe.

“In short,” said Wong, “the question is not simply, ‘Can we patent this?’ The better question is, ‘How can we maximize resources for maximum impact and effectiveness using our limited IP portfolio budget – to obtain and maintain the strongest and most practical protection with real commercial impact?’”

Different organizations, different approaches

Mungkarndee shared that based on her experience, each organization adopts a different approach to managing patents and protecting technologies and innovations. It depends on the size of the organization, its business model and the type and stage of the technology involved.

“For example, deep-tech innovations often require substantial R&D investment, involve long commercialization timelines and carry significant uncertainty. As a result, companies in this sector typically prioritize early-stage patent filings to attract investment, as investors generally seek exclusivity and barriers to market entry,” she revealed.

In the case of universities and public sector research institutions, the screening process works in a way that helps to ensure that public funding and government resources are utilized appropriately and efficiently. 

Meanwhile, large corporations commonly adopt structured innovation management systems such as the Innovation Funnel approach. These enterprises already have clearly defined business strategies, and their innovation management systems are aligned with these strategies. Under the Innovation Funnel approach, ideas are generated, evaluated, and eventually, the less viable concepts are filtered out. Ultimately, what is left in the pool are those ideas with the strongest commercial and strategic potential. “One of the key filtering factors is often intellectual property, which is integrated into innovation governance and gate decision-making processes,” said Mungkarndee.

She revealed that some organizations proceed to file patent applications for inventions that may face patentability issues. The move is part of the company’s broader strategy to build and strengthen its patent portfolio. “Such strategies may aim to enhance the company’s technological positioning, demonstrate innovation capability to investors or business partners, create defensive barriers against competitors, increase bargaining power in licensing or cross-licensing negotiations, or secure broader strategic coverage in emerging technology areas,” she said.

Nevertheless, the responsibility of protecting a patent right does not stop at filing an application. That is merely one of the first few steps. 

“Many businesses treat patent filing as a one-time exercise, where they file and forget, allowing these valuable rights to atrophy through inaction,” said Chua. “This can be a costly mistake.  Patent portfolios need active lifecycle management, and businesses must continuously assess which patents remain commercially relevant and worth maintaining, and whether existing licensing strategies are still fit for purpose as markets evolve. A patent that made strategic sense five years ago may today be a liability rather than an asset.”